Ex Parte Fairlie et al

Board of Patent Appeals and Interferences

Nov 21, 2008

10829434 - (D) (B.P.A.I. Nov. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MATTHEW J. FAIRLIE, WILLIAM J. STEWART,
ANDREW T. B. STUART, STEVEN J. THORPE,
and CHARLIE DONG
__________

Appeal 2008-5260
Application 10/829,434
Technology Center 1700
___________

Decided: November 21, 2008
___________

Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
CATHERINE Q. TIMM, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s rejection
of claims 25-27, 29-31, 36, 38-43, 45-61, 63, 64, 66, and 82-103. Claims
104-128 are also pending in the application but have been withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
Appeal 2008-5260
Application 10/829,434

The Examiner rejected claims 25-27, 29-31, 36, 38-43, 45-61, 63, 64,
66, and 82-103 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Pritchard,1 Scragg,2 Campbell,3 and Takriti.4 Office Action
mailed March 12, 2007, at 2-8.
The Examiner also rejected claims 25-27, 29-31, 36, 38-43, 45-61, 63,
64, 66, and 82-103 based on obviousness-type double patenting. Office
Action mailed March 12, 2007, at 9. The Examiner withdrew the
obviousness-type double patenting rejections in the Answer. Ans. 2.5
B. ISSUES
The Appellants do not point to any error in the Examiner’s motivation
to combine the teachings of Pritchard, Scragg, Campbell, and Takriti.
Rather, the Appellants contend that once combined, the references do not
teach or suggest a controller that receives and processes data pertaining to a
demand for hydrogen as recited in claim 25. App. Br. 5-7.6 The Appellants
also contend that the Examiner has failed to specifically address features
recited in dependent claims 36, 39-41, 43, and 45. App. Br. 7-8.
Thus, the issues on appeal are as follows:
Have the Appellants shown that the Examiner reversibly erred in
concluding that the combined teachings of Pritchard, Scragg, Campbell, and
Takriti teach or suggest a system comprising a controller that receives and
processes data pertaining to a demand for hydrogen as recited in claim 25?

1 US 5,592,028 issued to Pritchard on January 7, 1997.
2 US 4,084,038 issued to Scragg et al. on April 11, 1978.
3 US 4,388,533 issued to Campbell et al. on June 14, 1983.
4 US 6,021,402 issued to Takriti on February 1, 2000.
5 Examiner’s Answer mailed January 18, 2008.
6 Appeal Brief dated November 6, 2007.
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Have the Appellants shown that the Examiner reversibly erred in
finding that the combined teachings of Pritchard, Scragg, Campbell, and
Takriti teach or suggest the features recited in dependent claims 36, 39-41,
43, and 45?
C. FINDINGS OF FACT
The following findings of fact are supported by a preponderance of
the evidence. Additional findings of fact as necessary appear in the Analysis
portion of the opinion.
1. Claimed subject matter
Claim 25 is the only independent claim on appeal, and it reads as
follows:
An energy distribution network comprising:
(a) at least one hydrogen generator for generating hydrogen
using electric energy received from at least one source of
electric energy;

(b) at least one hydrogen storage reservoir for storing at least
some of the hydrogen produced by said at least one hydrogen
generator; and

(c) at least one controller in communication with said at least
one hydrogen generator and said at least one hydrogen storage
reservoir for controlling the generation and storage of
hydrogen, said at least one controller having a central processor
and computer for receiving and processing data and for
controlling the generation and storage of hydrogen based on
said data, said data including data pertaining to a demand for
hydrogen, data pertaining to availability of electric energy and
data pertaining to the status of said at least one hydrogen
generator.

App. Br. 11, Claims Appendix.

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2. Pritchard
Pritchard discloses a system for providing electrical energy from
wind. Pritchard 1:12-15.
Pritchard Figure 1 is a schematic diagram showing a wind farm
combined with an electrolysis plant, an energy storage device, various
combustion means and generating plant. Pritchard 2:44-46. Figure 1 is
reproduced below:

Pritchard Figure 1 depicts a system for
providing electrical energy from wind.

According to Pritchard, wind farm 1 provides electrical power via a
switch/transformer 2 to either the public utility grid 3 or an AC-DC
converter/filter 4. Pritchard 2:56-59.
Any resultant DC output of the wind farm after being suitably filtered
by the AC-DC converter/filter 4, is fed to an electrolysis plant 5 where water
is split into hydrogen and oxygen. The hydrogen produced passes through a
pipe to a compressor 6 then into a purification plant 7 and then into
hydrogen storage means 8. Pritchard 2:60-65.
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After passing into the hydrogen storage means 8, the hydrogen may
pass from the storage means 8 to a hydrogen combustion/electrical
generation plant 20. Alternatively, the hydrogen may pass from the storage
means 8 through a purification/liquefaction plant 9 into long term storage
means 10. Pritchard 3:1-6.
Pritchard discloses that the system preferably includes control means
to monitor and control the system. Pritchard 2:36-37.
3. Campbell
The invention disclosed in Campbell relates to solar powered electric
power generator systems. Campbell 1:5-8.
The system includes a column unit illustrated in Campbell Figure 3.
Campbell 2:47-48. Figure 3 is reproduced below:

Campbell Figure 3 depicts a column unit
of the system.

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In particular, the system of the invention includes a column unit 10 in
which air is heated to induce a flow of air therethrough, a mirror unit 11 for
directing solar energy onto the column unit 10 to heat the air therein, and an
electrical power generator unit 12 operatively associated with the column
unit 10 so that the air flowing through the column unit 10 will drive the
electric power generator unit 12. Campbell 3:6-14.
The system of the invention also includes a fuel synthesis unit 14
operatively connected to the generator unit 12 to generate and store fuel
while the generator unit 12 is being powered by the solar energy directed
onto the column unit 10. Campbell 3:14-18.
Campbell Figure 4 illustrates a fuel synthesis unit. Campbell 2:49-50.
Figure 4 is reproduced below:

Campbell Figure 4 depicts a fuel synthesis unit.
The fuel synthesis unit includes a fuel generator 90 whose output is
connected to a plurality of fuel storage tanks 91. Campbell 7:24-26.
The fuel generator 90 is an electrolysis unit. Campbell 7:29-32.
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To operate the fuel generator 90, a DC voltage is required. Campbell
7:49-50.
Hydrogen is generated in the tank housing labeled 92H. Campbell
7:56-66.
Hydrogen is stored in storage tanks 91. Campbell 7:67-8:3.
Campbell Figure 11 is a schematic view illustrating overall control of
the system. Campbell 2:64-65. Figure 11 is reproduced below:

Campbell Figure 11 depicts a schematic view
of the overall control of the system.

As seen in Figure 11, the output from the electrical power generator
unit 12 is connected to a power distribution network 130 which selectively
connects the output of unit 12 to the external power demand load, the
internal system demand load, and the fuel generator 90. Campbell 11:38-43.
The network 130 monitors the output of the generator unit 12 and the
external power demand load. When the output of generator unit 12 exceeds
the external power demand load and the internal system demand load, the
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network 130 supplies enough of the output of generator unit 12 to satisfy
these demand loads and routes the remaining output to the fuel generator 90
to generate hydrogen for storage. Campbell 11:46-53.
The overall operation of the system is controlled from a
microprocessor MPU. Campbell 12:5-12.
The microprocessor is programmed so that when the solar isolation
detected by sunlight monitor 134 is below a predetermined threshold level
judged to be insufficient to provide any significant heating of the air in
column unit 10, the microprocessor MPU will disable the sun tracking
control circuits 110 and 120. If fuel level monitor 136 indicates hydrogen is
available from storage tanks 91, then the microprocessor MPU operates the
distribution valve assembly 105 so that the hydrogen from tanks 91 is
supplied to operate power generator unit 12. The microprocessor MPU
monitors the output of the generator unit 12, the internal system demand
load and the external power demand load and controls distribution valve
assembly 105 so that just enough hydrogen is supplied to burner assembly
56 to operate the generator unit 12 so that its output equals the internal
system demand load and the external power demand load. Campbell 12:13-
34.
4. Scragg
Scragg discloses a process for generating and temporarily storing
generated electrical energy during periods of less than peak demand in the
form of electro-chemical, chemical, and electro-mechanical mediums. As
the demand for electrical energy increases, the stored energy is reconverted
back to AC electrical energy for use by consumers. Scragg 2:38-44.
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Scragg Figure 1 illustrates an electrical power generation and storage
system according to the disclosed invention. Scragg 3:26-28. Figure 1 is
reproduced below:

Scragg Figure 1 depicts an electrical power generation
and storage system.

A fuel source 11 provides fuel to an electric power generator 12. The
AC output of the power generator 12 is coupled to a power rectifier circuit
13. The DC output of the power rectifier circuit 13 is coupled to a chlorine-
sodium hydroxide electrolysis cell 14. The rectified current sustains the
electrolysis in cell 14 and converts saline water or brine to chlorine,
hydrogen, and sodium hydroxide. The hydrogen may be stored in
compressor storage tank 17. Scragg 3:46-59.
5. Takriti
The invention disclosed in Takriti relates to a computer implemented
process which provides generation levels, fuel usage, and prices at which
power can be traded, given (1) a set of load forecasts on an electric system,
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(2) a prediction of trading transactions that may take place within the next
few days, (3) a description of the physical properties of the generating units,
(4) an estimate of spot prices, and (5) fuel prices associated with load
forecasts. Takriti 1:6-15.
D. PRINCIPLES OF LAW
A claimed invention is not patentable if the subject matter of the
invention would have been obvious to a person having ordinary skill in the
art at the time the invention was made. 35 U.S.C. § 103(a); KSR Int’l Co. v.
Teleflex Inc., 127 S. Ct. 1727, 1734 (2007); Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 13 (1966).
Facts relevant to a determination of obviousness include (1) the scope
and content of the prior art, (2) any differences between the claimed
invention and the prior art, (3) the level of skill in the art, and (4) any
relevant objective evidence of obviousness or non-obviousness. KSR, 127 S.
Ct. at 1734; Graham, 383 U.S. at 17-18.
A person of ordinary skill is not an automaton but is a person of
ordinary creativity. KSR, 127 S. Ct. at 1742. One of ordinary skill in the art
is presumed to have skills apart from what the prior art references expressly
disclose. In re Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985).
Where a rejection is based on a combination of references, one cannot
show non-obviousness by attacking the references individually. In re Keller,
642 F.2d 413, 426 (CCPA 1981).
E. ANALYSIS
1. Claim 25
The Examiner found that Pritchard discloses a system that includes at
least one control means to monitor and control the system. Pritchard 2:37-
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38; Ans. 6 (distinguishing the control means described in column 2, lines 37-
38 from the means to monitor the electrolysis cells described in column 2,
lines 22-24 of Pritchard). However, the Examiner found that Pritchard does
not disclose the details of the control means. Ans. 6.
The Examiner found that Campbell discloses a system comprising a
microprocessor that is in communication with at least one hydrogen
generator and at least one hydrogen storage reservoir. The Examiner found
that the microprocessor receives and processes data for controlling the
generation and storage of hydrogen, including data pertaining to a demand
for hydrogen. Ans. 7-9.
The Appellants argue that Campbell does not “specifically disclose
that the microprocessor is in communication with the hydrogen storage 91.”
Reply Br. 2.7
Campbell discloses that the microprocessor is in communication with
fuel monitor 136. See, e.g., Campbell 12:10-12; Campbell Figure 11. In
operation:
If the fuel level monitor 136 indicates hydrogen is available
from storage tanks 91, then the microprocessor MPU operates
the distribution valve assembly 105 so that the hydrogen from
tanks 91 is supplied to burner assembly 56 for burning in air
passage 31 to heat the air and operate power generator unit 12.
The microprocessor MPU monitors the output of the generator
unit 12, the internal system demand load and the external power
demand load and controls distribution valve assembly 105 so
that just enough hydrogen is supplied to burner assembly 56 to
operate the generator unit 12 so that its output equals the
internal system demand load and the external power demand
load.

7 Reply Brief dated March 17, 2008.
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Campbell 12:21-34; see also Ans. 8.
Thus, it is reasonable to find that the microprocessor disclosed in
Campbell is in communication with hydrogen storage tanks 91 via either
fuel level monitor 136 or distribution valve assembly 105.
2. Claim 36
The Examiner found that Pritchard discloses that the system can
process data pertaining to the availability of electric energy, such as the
amount of electric energy available. Ans. 6, 11; Pritchard 4:34-37; see also
Campbell 11:46-53.
The Appellants have failed to direct us to any error in the Examiner’s
findings. Rather, the Appellants argue that “the Examiner has failed to show
how the prior art of record teaches or suggests each element of the claim.”
Reply Br. 3.
Claim 36 recites a Markush group. The disclosure in the prior art of a
species within a Markush group renders the Markush group unpatentable.
See In re Harnisch, 631 F.2d 716, 719-20 (CCPA 1980) (“’Markush’ was
the name of an applicant for patent . . . who happened to use in a claim a
type of definition of a genus or subgenus by enumeration of species . . . .”);
Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999) (a
single prior art species within a claimed genus anticipates the genus).
Significantly, the Appellants do not dispute that Pritchard teaches or
suggests at least one species within the Markush group recited in claim 36.
3. Claim 39
The Examiner found that Pritchard discloses a compressor 6 operably
connected to a hydrogen generator (electrolysis plant 5) and hydrogen
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storage means 8. Ans. 6; Pritchard Figure 1. The Appellants have failed to
point to any error in the Examiner’s finding.
4. Claims 40 and 41
The Examiner found that a system controller in Pritchard would
monitor data pertaining to the status of hydrogen in storage means 8 and 10
to facilitate the transfer of hydrogen from short-term storage means 8 to
long-term storage means 10 and vice versa. The Examiner found that such a
controller would monitor a minimum threshold, such as the hydrogen
pressure or the amount of hydrogen in the storage means. Ans. 12.
The Appellants argue that Pritchard fails to teach or suggest such a
system controller. The Appellants argue that the Examiner’s position
appears to be based on inherency, and inherency is not a substitute for some
teaching or suggestion in support of an obviousness rejection. Reply Br. 3.
The Appellants’ argument is not persuasive of reversible error. We
interpret the Examiner’s findings as relying on the knowledge of the skilled
artisan rather than inherency. See Sovish, 769 F.2d at 742; In re Bozek, 416
F.2d 1385, 1390 (CCPA 1969) (conclusion of obviousness may be based on
the common knowledge and common sense of the person of ordinary skill in
the art without any specific hint or suggestion in a particular reference).
The record before us establishes that it was known to use a controller
or microprocessor to control the generation and storage of hydrogen. See,
e.g., Campbell 11:46-53. We find that it would have been within the skill of
the ordinary artisan to maintain sufficient hydrogen storage by initiating or
increasing hydrogen production when hydrogen storage falls below a certain
level. We find that one of ordinary skill in the art would have known that
this level may be measured several ways, including measuring the hydrogen
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pressure or the amount of hydrogen in a storage reservoir. The Appellants
have failed to establish otherwise.
5. Claim 43
The Examiner found that the microprocessor disclosed in Campbell
would have been expected to have some form of operator interface, such as a
keyboard, so that it can be programmed. Ans. 12.
The Appellants do not point to any error in the Examiner’s finding
that the microprocessor disclosed in Campbell would have been expected to
have an operator interface. Rather, the Appellants argue that “there is no
teaching or suggestion in the prior art of record of a user activation interface
for receiving data concerning a demand for hydrogen as claimed.” Reply
Br. 3.
As discussed above, the system disclosed in Campbell includes a
microprocessor that receives and processes data for controlling the
generation and storage of hydrogen, including data pertaining to a demand
for hydrogen. Ans. 7-9. We find that one of ordinary skill in the art would
have expected an operator interface to be useful for receiving such data.
Sovish, 769 F.2d at 742; Bozek, 416 F.2d at 1390.
6. Claim 45
The Examiner found that Pritchard, Campbell, and Scragg show that
the demand for electricity and the ability to produce electricity from one or
more sources varies over a period of time. The Examiner also found that
Takriti teaches that it is useful to forecast or predict various aspects of
producing electricity to manage costs. Ans. 12.
The Appellants do not point to any error in the Examiner’s findings.
Rather, the Appellants argue that “the Examiner has not shown how each of
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the elements of the claimed group is taught or suggested by the prior art of
record.” Reply Br. 3.
Claim 45 recites a Markush group. As discussed above, the disclosure
in the prior art of a species within a Markush group renders the Markush
group unpatentable. See Harnisch, 631 F.2d at 719-20; Atlas Powder, 190
F.3d at 1346. Significantly, the Appellants do not dispute that Pritchard,
Campbell, Scragg, and/or Takriti teach or suggest at least one species within
the Markush group recited in claim 45.
7. Examiner’s objection
The Appellants disagree with the Examiner’s objection to the title of
the invention. App. Br. 4. This matter is petitionable rather than appealable.
See MPEP § 1002.02(c) (8th ed., Rev. 7, July 2008). Thus, the matter is not
properly decided in this appeal.
F. CONCLUSIONS OF LAW
The Appellants have not shown that the Examiner reversibly erred in
concluding that the combined teachings of Pritchard, Scragg, Campbell, and
Takriti teach or suggest a system comprising a controller that receives and
processes data pertaining to a demand for hydrogen as recited in claim 25.
The Appellants have not shown that the Examiner reversibly erred in
finding that the combined teachings of Pritchard, Scragg, Campbell, and
Takriti teach or suggest the features recited in dependent claims 36, 39-41,
43, and 45.
G. DECISION
The rejection of claims 25-27, 29-31, 36, 38-43, 45-61, 63, 64, 66, and
82-103 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Pritchard, Scragg, Campbell, and Takriti is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED

PL INITIAL:
sld

MANELLI DENSION & SELTER
2000 M STREET, NW
SUITE 700
WASHINGTON, DC 20036-3307

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